In Brazil, the grace period is a statutory provision defined in Article 12 of the Brazilian Patent Law (Law No. 9,279/96). The provision establishes that the disclosure of an invention or utility model shall not be considered as part of the state of the art when it occurs within the 12 months preceding the filing date or the priority date of the patent application, if such disclosure is made:
By the inventor;
By the Brazilian patent and trademark office (BRPTO), through the official publication of a patent application filed without the inventor’s consent, based on information obtained from the inventor or resulting from acts carried out by the inventor; or
By third parties, based on information obtained directly or indirectly from the inventor or resulting from acts carried out by the inventor.
Although it is possible to indicate that there is a non-prejudicial disclosure to the application and submit a corresponding declaration upon filing, it is not mandatory to do so to take advantage of the grace period in Brazil. Any requirement relating to the 12-month grace period may be fulfilled during the substantive examination, in reply to the BRPTO’s request. This is provided for in the sole paragraph of Article 12, which reads: “The BRPTO may require the inventor to provide a declaration relating to the disclosure, accompanied or not by proof, under the conditions established in the rules.”
How the grace period operates in practice
Over the past five years, more than 300 cases have relied on the grace period exception before the BRPTO, with utility model applications leading the segment. Conversely, over 70 cases in the same period attempted to invalidate prior art by incorrectly invoking Article 12 of the Brazilian Patent Law, in situations where it was not applicable. For example:
When the reference was a patent document;
When the disclosure was neither made by the inventor nor did it contain information derived therefrom; or
When the publication occurred before the 12‑month window.
Evidential challenges and examiner discretion
A significant hurdle often faced by applicants arises when the prior disclosure has not been made directly by one of the inventors listed in the patent application. For example, this situation may occur when the earlier document is authored by the applicant itself or by one of its employees.
In such cases, the BRPTO requires the submission of additional evidence to unequivocally demonstrate that the information indeed originated from the inventors. However, the types of documents considered sufficient are not expressly defined by the Brazilian Patent Law – which merely sets forth that the BRPTO may require a declaration from the inventor regarding the disclosure, accompanied or not by supporting evidence, under conditions set forth in regulation – or the examination guidelines.
As a result, applicants face a lack of objective parameters, and the evaluation of such evidence ultimately relies on the examiner’s discretion, thereby introducing an additional layer of uncertainty into the outcome.
The grace period has been most frequently invoked by Brazilian applicants, with nearly 90% of voluntary declarations coming from domestic parties. Among these, approximately 75% are individual inventors, universities, or research institutions. Nevertheless, it is important to highlight that the Brazilian Patent Law does not restrict its applicability to these categories, nor to national applicants.
In 2009, however, the BRPTO’s Attorney-General Office published an opinion suggesting that the grace period was primarily intended to protect individual inventors or small companies, which historically tend to lose patent rights due to premature disclosure of the invention. The opinion recommended that the exception be applied with greater restrictions to larger companies, which are generally better advised and more familiar with industrial property rights.
Nevertheless, this opinion carries no normative force. Moreover, although such discussion was raised, the opinion specifically addressed the application of the grace period for patent documents, an interpretation that was later consolidated in BRPTO’s Rule No. 169/2016 (Guidelines for the Examination of Patent Applications – Block II).
The Attorney-General Office’s opinion was requested in light of a practice reported by the examiners, in which certain applicants, after filing abroad and missing the deadline to file in Brazil, argued that the publication of their application by the foreign office or by WIPO should be considered disclosure by “third-parties” under item III of Article 12.
In this sense, items 3.59 and 3.60 of BRPTO’s Rule No. 169/2016 establish that only non‑patent documents, such as scientific articles or oral communications duly recorded, may qualify for the grace period. Thus, the publication of a patent application by the inventor, prior to the application under examination and filed in any country, cannot be considered a disclosure covered by such safeguard.
Limits of the grace period and international risks
It is also crucial to emphasise that not all jurisdictions recognise this mechanism, and where it exists, the rules vary significantly. For instance, in Europe and China, the grace period is limited to six months and applies only to specific, more restrictive disclosure scenarios. Consequently, inventors seeking international protection must be aware that a disclosure tolerated in Brazil may constitute prior art abroad, thereby preventing patentability.
In addition, applicants should bear in mind that once information is published before filing, third parties may release similar content in the interim, and such disclosure will be deemed as valid prior art. Proving that these third-party disclosures were derived from the inventor’s original work is notoriously challenging, leaving the applicant vulnerable to loss of novelty.
Despite its relevance, the grace period should always be treated as an exception rather than the rule. The best practice remains filing the patent application before any public disclosure of the invention, thereby guaranteeing protection across jurisdictions. Inventors must also exercise caution with online publications and social media posts, as these may constitute disclosures with potential impact on patent rights.
Careful management of information and timing is, therefore, essential to maximise the chances of securing valid and enforceable patent protection both in Brazil and internationally.
